There are a variety of ways that people speak and explain things in real life that can really get a patent applicant into trouble. Every word matters, it is just that simple. When you file a patent application everything in that application should be a self serving description of the invention. Patent applications should not read like a laboratory notebook, or be written to tell the history of what you have done (or tried) and why. Patent applications positively describe the invention, period. Stick with the invention and do not embellish. Describing your invention as you might to a friend at a cocktail party will only get you into trouble.
And for goodness sakes, don’t make any admissions! Admissions are unnecessary. Anything you may want to say in order to set up an argument you plan to make later can be argued later without making comparisons or unnecessary statements about the prior art in your patent application. As long as you adequately and accurately describe your invention positively in the patent application those arguments and explanations can be made during prosecution if and when they are ever necessary— and only if and when they actually become necessary.
So what is an admission? A statement made during patent prosecution identifying the work of another as prior art is called an admission. Admissions can and will be relied upon by patent examiners for both novelty (35 U.S.C. 102) and obviousness (35 U.S.C. 103) determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the express terms of the statute. See Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988)(patent owners admission during prosecution was “strong evidence” that was “binding upon him” in litigation).
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Admissions should be avoided at all costs, regardless of how innocent they seem to be. This is a lesson that all new patent practitioners and inventors need to take to heart. No matter how innocuous the statement may seem, always remember that no good deed will go unpunished! Everything you do say can and will be used against your patent once it issues — forever. Patent applicants should be given a Miranda warning prior to filing a patent application.
If the specification of your patent application (i.e., the written portion of the application except for claims) identifies work done by another as prior art, the subject matter so identified is treated as admitted prior art. In re Nomiya, 509 F.2d 566, 571 (CCPA 1975) (holding applicant’s labeling of two figures in the application drawings as prior art to be an admission that what was pictured was prior art relative to applicant’s improvement). Ordinarily, there is no good reason to identify the prior art in the specification of a U.S. patent application. Only mischief and grief can come from violating this rule.
Of course, notice that the focus here relative to admissions is on what is included in the patent application itself. It can be and most frequently is extremely beneficial for the inventor and patent practitioner to spend time identifying exactly what is unique compared to the prior art so that the invention can be described to make sure that uniqueness is explained with as much detail as possible in the patent application. You just want to be extremely careful about actually identifying the prior art and/or making any comparisons (or explaining differences) vis-a-vis the prior art in a patent application.
A statement relating to the work of the inventor, however, is not an admission that the inventor’s own work is prior art. The law presumes that the inventor is knowledgeable of their own work, and will continue to build upon their own inventions. See Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003); see also Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650 (Fed. Cir. 1984) (“[W]here the inventor continues to improve upon his own work product, his foundational work product should not, without a statutory basis, be treated as prior art solely because he admits knowledge of his own work. It is common sense that an inventor, regardless of an admission, has knowledge of his own work.”).
Drafting a claim in Jepson format is an implied admission that the subject matter contained in the the preamble is the prior art work of another. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982) (holding preamble of Jepson-type claim to be admitted prior art where applicant’s specification credited another as the inventor of the subject matter of the preamble). However, this implication may be overcome where the applicant gives another credible reason for drafting the claim in Jepson format. In re Ehrreich, 590 F.2d 902, 909-910 (CCPA 1979) (holding preamble not to be admitted prior art where applicant explained that the Jepson format was used to avoid a double patenting rejection in a co-pending application and the examiner cited no art showing the subject matter of the preamble). Moreover, where the preamble of a Jepson claim describes the applicant’s own work, such may not be used against the claims. Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650 (Fed. Cir. 1984); Ehrreich, 590 F.2d at 909-910.
Nevertheless, Jepson claims are disfavored in the United States and should be avoided.
Having said this, a Jepson claim format can offer a useful analytical framework for inventors and novice patent practitioners as they attempt to “sketch” a claim. It is critical that the claims of the patent application incorporate what makes the invention new and nonobvious (i.e., unique). A Jepson claim offers a somewhat easier analytical format for novices in that it explains specifically what makes the invention unique in the claim. Everything prior to the transition “wherein the improvement comprises” is typically admitted prior art (as discussed above). Only that which comes after the transition in the claim is treated as being new.
I do not recommend using Jepson claims because this claiming technique makes it very easy for the patent examiner to use your own words against you and simply focus on finding those elements you have specifically identified as the only ones contributing to the invention being unique. Of course, writing text that specifically identifies what you view as the improvement and what you view as being within the prior art can be a useful exercise that helps focus you on the important aspects of what must be disclosed in a patent application.
The point here, now for the second time, is there is a difference between the work you do yourself to help understand the parameters of the invention and what you actually write into the patent application. Sketching claims and making sure you have identified the core uniqueness of the invention is absolutely essential. Saying that it is a core uniqueness or making statements about the prior art in the patent application itself is a big mistake.
Another question that sometimes comes up relative to admissions is whether the prior art disclosed to the patent examiner is considered an admission. The short answer is no.
Once a patent application gets into the prosecution phase any material prior art that is known by the applicant or the applicant’s representative must be disclosed to the Patent Examiner in order to fulfill the duty of candor mandated by 37 C.F.R. 1.56. The listing of a reference in an information disclosure statement filed to notify the Examiner of material prior art is not taken as an admission that the reference is in fact prior art against the claims. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354-55 (Fed Cir. 2003); see also 37 CFR 1.97(h) (“The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).”).
Today we have explored the topic of admissions. A closely related matter deals with those things that are said during prosecution of the patent application. The rule that any good deed goes punished remains constant, and anything you do say can and will be used against the patent forever. Prosecution related statements that cause concern arise under the law as prosecution history disclaimer and prosecution history estoppel. Stay tuned for further discussion of those topics in an upcoming article.